For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Thursday, 1 August 2013

Geographical Names as Trade Marks: Think Twice

Last week came news that ICANN would likely refuse amazon.com’s application for the top level domain .amazon because Amazon is a geographical region first and foremost (more on the topic here and here).  Now, two more geographical locations are impacting IP claims. 


The first involves the US city of Boston, which is one of the oldest cities in the US, having been founded in 1630.  Situated on the Charles River, Boston is the site of Boston Tea Party, and home to the first US public school, first US transit system, Harvard University, the Boston Pops, numerous top-ranked sports teams [please don't name all of them, pleads Merpel], and the elite Boston Marathon, all of which give Bostonians reason to be proud.
Unfortunately, the joy and excitement of the Boston Marathon was interrupted this year by two bomb blasts that killed three spectators and wounded many others.  But Boston is a resilient city, and the horror of that day gave way to a strengthened community.  Boston is “Boston Strong”.  In the aftermath of the bombing, the Boston Strong slogan appeared on t-shirts and other products, fundraiser events and advertisements, and in countless media reports.  Several companies and individuals quickly filed multiple trademark applications for use on products including apparel, accessories, coffee, and beer.  Some applicants claimed that their applications were for the benefit of the people of Boston - a defensive measure to ensure less noble applicants were unable to monopolize the slogan. Since the slogan was being used nearly universally, it seemed unlikely that any one applicant could truly lay claim to Boston Strong as a trade mark.  The US Patent and Trademark Office agreed, and on July 12, it began issuing notices of refusal to the applicants.  The USPTO is rejecting the applications on the grounds that “Boston Strong” cannot operate as a trademark, as an indicator of source, because it conveys “informational, social, political, religious and other similar messages.” In other words, Boston Strong rightfully belongs in the public domain. 
Example of USPTO refusal here 
More on the USPTO actions here
One of many users of the sun image
On the other side of the US, Leonard Barshack filed a lawsuit against Twitter and Sun Valley Company.  Sun Valley Company is the owner and operator of Sun Valley Resort and hotel properties located in Sun Valley, Idaho.  Sun Valley resort is a popular winter ski resort at the base of Bald Mountain.  Barshack is a resident of Ketchum, a town adjacent to the town of Sun Valley.  An avid participant in social media, Barshack shared Tweets on Twitter related to the Sun Valley region and its local businesses, including, periodically, his experiences skiing at Sun Valley resort.  His Twitter handle was @SunValley and his Twitter feed page included an image of a smiling sun (see similar image, right). 

Sun Valley Company lodged a complaint with Twitter claiming that Barshack was infringing on its trade marks by using the @SunValley handle and the smiling sun logo. According to Barshack’s complaint, Twitter failed to provide him with an opportunity to respond to Sun Valley Company’s complaint; instead, and in contradiction with Twitter's Trademark Policy, which states that a user would be given an opportunity to respond to any infringment claims, Twitter immediately suspended Barshack’s account and assigned the @SunValley account to Sun Valley Company.  Barshack also alleges that Twitter failed to respond to Barchack’s demands to restore the Twitter feed to him upon his submission of information confirming that, with respect to the claim over the word mark Sun Valley, SunValley was the name of a location and not exclusively owned or used by Sun Valley Company.  In addition, Barshack submitted USPTO records showing that a Sun Valley Company trade mark for a smiling sun logo was abandoned, perhaps because numerous businesses in the Sun Valley area used nearly identical smiling sun images in their logos and product designs.

Twitter's Trademark Policy states that it will suspend a user's account if there is "a clear intent to mislead others through the unauthorized use of a trademark."  As Barshack points out in his complaint, filed in a federal District Court in Idaho, his use of @SunValley doesn't constitute use of the Sun Valley Company's trade mark, given that Sun Valley is the name of the town, and is also used by many other businesses, like Sun Valley Cleaners, that operate in Sun Valley, Idaho.  He also explains that he did not exhibit a clear intent to mislead anyone as to any connection between himself and Sun Valley Company, despite periodically Tweeting about skiing at the ski resort.  [Snorts Merpel, wouldn't any cat who lives at the base of a mountain ski and Tweet?]

This Kat thinks Barshack's point is well taken that Sun Valley Company can't truly claim exclusive use over a town's name, except for the limited right to use the name within the company's established trade marks. Sun Valley Company apparently abandoned its trade mark registration of the stand-alone smiling sun drawing (though it retains a trade mark registration for a smiling sun appearing above the words Sun Valley, at left), perhaps because of the widespread use among local businesses. Even if Sun Valley Company was the creator of the sun image, the mark has been diluted by the allowed use by others. Indeed, the smiling sun seems to have become a mascot of sorts for the area of Sun Valley, Idaho.  

Regardless of the outcome of Barshack's lawsuit, perhaps this is a good reminder to businesses that use a geographic location as part of their trademark: don't expect to have sole use of the name, or be ready to face challengers. It is also a reminder to Twitter and other social media service providers to adhere to the procedures established within their policies when responding to IP claims from users.
Barshack's complaint here; the Exhibits are particularly amusing
Humorous response to squabble over a West Orange, New Jersey URL here

1 comment:

Anonymous said...

A case relating to the mark "Chiemsee" for sporting goods comes to mind, the Chiemsee being a lake in southern Germany. This case was considered by the ECJ see judgement C-108/97

http://www.ipo.gov.uk/c10897.pdf

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